Overview

To prevail on a claim of trademark infringement, a plaintiff must establish that it has a valid mark entitled to protection; and that the defendant used the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the plaintiff's consent. The plaintiff must also show that defendant's use of the mark is likely to cause confusion as to the affiliation, connection or association of defendant with plaintiff, or as to the origin, sponsorship, or approval of defendant's goods, services or commercial activities by plaintiff. See 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005). Thus, "use," "in commerce," and "likelihood of confusion" are three distinct elements necessary to establish a trademark infringment claim.

"Use"

"Use" of a trademark by an alleged infringer must be established as a threshold matter. Any number of activities may be "in commerce" or create a "likelihood of confusion," however, such activities do not violate the Lanham Act absent the use of a trademark. The use requirement serves a limiting function by preventing trademark holders from asserting a generalized right to control language. Some conduct through which a seller or producer seeks to capitalize on a competitor's name recognition does not amount to use for purposes of a trademark infringement claim. "Pop-up" advertisements on the Internet or specific product placement in retail stores may be objectionable to the holder of a trademark, but such uses do not amount to trademark use and are not actionable under the Lanham Act. See 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005).

"In commerce"

The statutory requirement that an alleged infringing use of a trademark be "in commerce" to establish a claim of infringement under the Lanham Act is derived from trademark law's basis in the congressional power to regulate interstate commerce. To satisfy the "in commerce" requirement, the plaintiff must demonstrate that the allegedly infringing activities have a substantial effect on interstate commerce. Activities that meet the "in commerce" requirement include: advertising by the alleged infringer in more than one state; interstate movement of goods bearing an infringing mark from manufacturer to seller; sending a product to another state for the purpose of registering a trademark; and advertising in newspapers that have interstate distribution, on billboards near interstate highways, or on radio or television stations with an interstate broadcasting range.

"Likelihood of confusion"

"Likelihood of confusion" is the central focus of any trademark infringement claim. A likelihood of confusion exists when consumers viewing the allegedly infringing mark would probably assume that the product or service it represents is associated with the source of a different product or service identified with a similar mark. Courts conducting a likelihood of confusion analysis apply a different standard to directly competing, as opposed to non-competing, goods. See A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3rd Cir. 2000). When the alleged infringer and the trademark owner deal in competing goods or services, the court rarely needs to look beyond the mark itself; infringement will usually be found if the two marks at issue are sufficiently similar that consumer confusion can be expected. If the goods in question are completely unrelated, confusion is unlikely and infringement will generally not be found.

If the goods in question are related but do not directly compete for sales, the likelihood of confusion analysis becomes more complex. The Lapp test is a non-exhaustive list of factors to be considered in determining whether there is a likelihood of confusion between marks. Factors relevant to a determination of likelihood of confusion include: the strength of the trademark owner's mark; the degree of similarity between the trademark owner's mark and the allegedly infringing mark; evidence of actual consumer confusion; the marketing channels used; the type of goods involved and the degree of care likely to be exercised by the purchaser; the alleged infringer's intent in selecting the mark; and other facts showing that the consuming public is likely to expect the trademark owner to manufacture a product in the alleged infringer's market, or is likely to expand into that market. See Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983).

Defenses

Trademark law is equitable and utilizes the traditional equitable defenses with the added element of a presumption favoring the registrant for trademarks that are registered under the Lanham Act. In addition to the equitable doctrines of laches, estoppel, and unclean hands, an alleged infringer may assert the defenses of fair use and collateral use. Fair use allows commentary or criticism that incidentally involves the use of a trademark so long as such use is for a purpose other than that normally made of a trademark. When a party uses a trademarked item as a component of a more complex product, collateral use allows the party to identify that component by its trademarked name.

Remedies

The remedies for infringement under the Lanham Act are statutory and consist of: injunctive relief; an accounting for profits; damages, including the possibility of treble damages when appropriate; attorney's fees in "exceptional cases;" and costs. See 15 U.S.C. § 1117. These remedies are cumulative, meaning that a successful plaintiff may recover the defendant's profits in addition to any damages, or other remedies awarded.